An easy route to patent protection in Morocco – just extend your European patent

A new option for obtaining patent protection will soon be available in Morocco, which will allow the rights there to be derived from a European patent.

On 1 March 2015 an agreement between the European Patent Office (EPO) and the Moroccan Industrial and Commercial Property Office (OMPIC) will enter into force, which will make it possible to validate a European patent in Morocco. A European patent validated in Morocco will then effectively be treated as a Moroccan national patent and will be subject to Moroccan patent law.

This option will only be available for European patent applications filed on or after 1 March 2015. For those European patent applications derived from international (PCT) patent applications, as a regional stage filing, the PCT application must have been filed on or after 1 March 2015.

In order to request validation in Morocco, a fee must be paid to the EPO within the same time period as the payment of the designation fee and extension fees. Therefore, in the same manner as an applicant can currently pay an extension fee to extend the European patent application to cover Bosnia Herzegovina and/or Montenegro, the applicant will be able to request extension of the patent application to cover Morocco.  However, a two-month grace period will be available, provided a 50% surcharge is also paid. The extension fee for Morocco will be 240 Euros.

Once the European patent grants, a second stage is required to complete the validation in Morocco, in order to obtain a patent right in Morocco which has the same scope of claims as granted by the EPO.  In this regard, a translation of the granted claims into Arabic or French must be submitted to OMPIC – as opposed to a full translation of the application which is required for a direct national application in Morocco. Moreover, as a French translation of the claims must already be filed as part of the EPO grant procedure, this step will incur no additional translation costs.

As such, for applicants interested in obtaining protection in Morocco this new procedure should prove significantly cheaper and more streamlined than applying for a direct national patent in Morocco.

Morocco is the first country to bring into force such a validation agreement with the EPO, but other countries look set to follow as the EPO extends its reach even beyond Europe. Similar agreements have been signed (but have not yet come into force) in Tunisia and Moldova and preliminary discussions are reportedly underway in Georgia and OAPI (the union of French speaking African countries). If the procedure proves successful in Morocco it seems likely that many other countries will consider following suit.

Applicants interested in obtaining patent protection in multiple jurisdictions may welcome the EPO’s efforts in extending its reach as a patent granting organisation to ever more countries, since this could lead to cost and time savings.  The EPO is well-respected for the quality of its patent search and examination and practice and procedure before the EPO is guided by a significant body of case law.  However, the EPO is not necessarily a panacea for applicants, particularly for applicants who want to obtain a granted patent quickly.  For instance, the time it takes to obtain a UK patent via the EPO is typically much longer than via the UK IPO.

If you are interested in obtaining patent protection in Morocco, or would like to know more about any of the issues discussed in this article, then please contact your usual patent attorney at Barker Brettell.